Case Digest (G.R. No. 217781)
Facts:
The case of San Miguel Pure Foods Company, Inc. v. Foodsphere, Inc., G.R. No. 217781 and G.R. No. 217788, June 20, 2018, the Supreme Court Second Division, Peralta, J., writing for the Court; Carpio, Senior Associate Justice, Perlas‑Bernabe, Caguioa, and Reyes, Jr., JJ., concur. Both parties are manufacturers and distributors of processed hams: San Miguel Pure Foods Company, Inc. (SMPFCI) owns the registered mark “PUREFOODS FIESTA HAM” and associated trade dress, while Foodsphere, Inc. markets hams under the mark “PISTA” and the housemark “CDO.” On November 4, 2010, SMPFCI filed a complaint with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) under Sections 155 and 168 of R.A. No. 8293 (Intellectual Property Code), alleging trademark infringement and unfair competition arising from Foodsphere’s use of the word “PISTA,” allegedly similar packaging, and promotional images resembling SMPFCI’s “FIESTA” ham materials.SMPFCI alleged long use and goodwill in the “FIESTA” mark and trade dress (introduced in 1980), claimed substantial advertising outlays, and asserted that Foodsphere’s adoption of the word “PISTA,” similar pictorial depictions of a partly sliced ham with fruits, red‑dominated paper ham bags, and campaign slogans created likelihood of confusion and actual confusion, costing SMPFCI alleged foregone income and sales. It prayed for injunctive relief, actual and exemplary damages (including P27,668,538.38 as lost income and P899,294.77 monthly damages), and attorney’s fees. Foodsphere denied infringement and unfair competition, arguing that its mark is visually and aurally distinct, is used with the housemark “CDO,” that other “FIESTA” registrations exist, and that consumers of premium hams are discerning; Foodsphere also traced priority use of some marks and packaging elements.
On July 17, 2012, the BLA Director dismissed SMPFCI’s complaint for lack of merit, finding no trademark infringement (noting PISTA’s earlier use and registration), prescription under the administrative rules, and insufficient evidence on unfair competition. On September 10, 2013, the IPO Office of the Director General partially granted SMPFCI’s appeal: it affirmed the absence of trademark infringement but found Foodsphere liable for unfair competition, ordered Foodsphere to cease and desist, awarded nominal damages of P100,000 and attorney’s fees of P300,000, and ordered seizure/disposal of offending materials. Both parties appealed to the Court of Appeals (CA).
The CA Eleventh Division, in a March 6, 2014 resolution, denied SMPFCI’s petition and affirmed the Director General’s rejection of trademark infringement. The CA Fourteenth Division, in a Decision dated September 24, 2014, denied Foodsphere’s petition and affirmed that Foodsphere committed unfair competition; it originally ordered nominal and exemplary damages and attorney’s fees, but in a Resolution dated April 8, 2015 the CA deleted the award of exemplary damages, explaining SMPFCI had not prayed for...(Pro-only)
Issues:
- Was the CA correct in deleting the award of exemplary damages from its September 24, 2014 Decision (i.e., may SMPFCI challenge that deletion)?
- Did the CA and the IPO Director General commit grave abuse of discretion in finding Foodsphere guilty of un...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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